Trade Mark and Design Searches
21 February 2016
Whenever a new launch is proposed, whether it is for a product, brand, business name or an advertising campaign, there is always a risk that someone else is already using an identical or a similar name or design. If so, then that party may be entitled to obtain an immediate injunction from the court to prevent the launch and obtain damages for trade mark, design right or copyright infringement and/or passing off.
It is for this reason that most well advised businesses will undertake a comprehensive search programme prior to adopting a new name or design in order to minimise exposure to such risks. The financial consequences of a failed launch, together with the attendant PR damage and loss of management time, should not be underestimated.
Searching is an area that requires considerable skill and experience to ensure that appropriate searches are conducted and at the required level of complexity. Because searching can be an expensive and sometimes uncertain business, the aim of this guide is to illustrate the variety of searches that are available together with their benefits and limitations.
What variables should be considered?
Mark: The first variable is the mark itself. Is the search intended to locate a specific registration only, or is to look for any marks that might be regarded as similar or having a phonetic variation?
Classes: All goods and services are subdivided for trade mark purposes into 45 “Classes”. Should the search focus only on identical goods and services in the same Class of interest, or should the search extend to similar goods and services in different Classes? This is of particular importance where a Class has been changed; for example “Restaurant services”, formerly Class 42 and now Class 43.
Territory: In which countries is the mark to be used in? Trade marks and design rights are territorial in nature and each country has its own register. Our UK searches will as a matter of course cover the European Community and International Registers insofar as these apply to the UK. It is often overlooked that many UK companies also sell products in Ireland.
Costs: The level of complexity of the search needs to be considered as this will impact on fees and disbursements. Broadly speaking, screening and identical searches are the cheapest and the fastest as they can both be conducted on-line. Full availability searches are the most expensive and have a standard 5 day turnaround.
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